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EPO Update – Computer Programs & Other Excluded Inventions

We have previously commented on the legal perspectives of, and attempted reconciliation between, the European Patent Office (EPO) and UK Intellectual Property Office (UK IPO) with respect to the “as such” exclusions to patentability under Art. 52(2) & Art. 52(3) EPC. This practice note provides:

Section I: A summary of the principal case law in Europe and the UK;

Section II: An update on recent developments, including signposts toward what might amount to a “technical contribution”;

Section III: Observations & practical recommendations (based on experience) on how to reduce the possibility of negative European decisions.

During the six months since the judgement of the UK Court of Appeal in Symbian Limited vs.Comptroller [2008 EWCA Civ 1066 Case No. A3/2008/0950], there has been a noticeable change in outlook from UK examiners. Another UK judgement, AT&T KnowledgeVentures/CVON [2009 EWHC 343 (Pat)], has confirmed our earlier recommendations on the best approach to dealing with these inventions.

The Legislation

Art. 52(1) EPC: European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible to industrial application.

Art. 52(2) EPC: The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

a) discoveries, scientific theories and mathematical methods;

b) aesthetic creations;

c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

d) presentations of information.

Art. 52(3) EPC: Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. [emphasis added]

No single decision satisfactorily deals with the “technical” nature of patentable inventions. Indeed, in looking at the statute reproduced above, no reference exists in Art. 52(2) EPC to any “technical” requirement or test. This has caused the UK judiciary (at least) to state that “The stipulation of a requirement for a technical contribution can lead to a potentially dangerous exercise of asking whether an application satisfies that stipulation rather than whether it satisfies the statutory requirement itself”.

However, the requirement for a technical contribution remains the established test following T208/84-Vicom. So where exactly does this leave us?

Section I: Principal Case Law

The following summaries represent what we currently believe are important points raised in some of the principal decisions. The list of cases is not exhaustive and only intended to raise awareness to some important issues relevant to prosecution of EP or UK patent applications. These summaries might therefore be a starting point, but they are not meant as a substitute for considered legal research and detailed understanding.

1. G01/04 — Diagnostic MethodsAccording to the European Patent Office Enlarged Board of Appeal (EBA), the correct approach is to “take a narrow view on what is excluded, placing emphasis on the legislature’s deliberate use of the words ‘as such’”.

2. T208/84 — VicomA “technical contribution” was achieved from an enhanced picture that came about from a substantial increase in processing speed. It was not the enhanced image in Vicom that brought the case outside the exclusion of Art. 52(2) EPC, but rather the way the enhanced image was produced.

The decision established a global approach to “invention”. The Board said that “Decisive is what technical contribution the invention as defined in the claims when considered as a whole makes to the known art”. Furthermore, it would be “inappropriate” to make a distinction between embodiments of the same invention carried out in hardware or in software because “an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used”.

3. T0154/04 — Duns ApplicationArt. 52(2) EPC does not exclude from patentability any subject matter or activity having a technical character even if it is related to the items [programs for computers, business methods, etc.] listed in the provision since these items are only excluded “as such”.

The four requirements for invention, novelty, inventive step, and susceptibility to industrial application are essentially separate and independent criteria of patentability.

And, the claim must be construed to determine the technical features of the invention, i.e. those features which contribute to the technical character of the invention.

That said, in a claim it is legitimate to have a mix of “technical” and “non-technical” features, and these non-technical features may actually form a dominating part of the claimed subject matter. However, non-technical features, to the extent that they do not interact with the technical subject matter for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus to be ignored in assessing novelty and inventive step.

And in relation to the problem-solution approach… the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may therefore “be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art”.

4. T1543/06 GameaccountThis case was similar to Duns Application because it also related to a mixed technical/non-technical invention. The case failed because the Board was unable to identify any effects other than those inherent in the game rules themselves or those connected to carrying out functions by a computer with a processor and display. Also, no identifiable synergistic effect could be identified between the game rules and technical implementation.

This decision confirmed that the mere technical implementation of excluded subject matter “as such” cannot form the basis of inventive step, i.e. it is necessary to ask how the per se subject matter (e.g. a game or business method) is implemented. Additionally, a consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter. Gameaccount therefore follows from the earlier decision T1173/97.

5. T1173/97 – IBM “Computer Program Product”This decision established that computer program claims are allowable “…if the program has the potential to bring about, when running on a computer, a further technical effect which goes beyond the normal physical interactions between the program and the computer“.

6. T258/03 – HitachiThis case related to the automation of the non-technical activity of performing a “Dutch” auction in the absence of bidders in which a server (implementing the method) applied a business scheme (amounting to rules of an auction) and performed any necessary calculations.

The decision provided a definition of what amounts to an “invention” under Art. 52(1) EPC, i.e. “subject matter having technical character” that can be inferred from the physical features of an entity or the nature of an activity or could be conferred on a non-technical activity by the use of technical means.

From the perspective of inventive step, T258/03-Hitachi confirmed that an invention which as a whole falls outside the exclusion zone of Art. 52(2) EPC (i.e. is technical in character) cannot rely on excluded subject matter alone, even if that non-technical matter is novel and non-obvious, i.e. “Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject matter”.

7. T125/01In T125/01, a pure software enhancement (with no changes to the physical hardware) constituted an invention because the software made a technical contribution.

8. T163/85Coded information was held capable of conferring a technical character on the information itself because it reflected the properties of the technical system by virtue of its formatting and/or processing. In this case, the television signal was not an abstract entity, but a physical reality and could be detected.

9. T833/91In T833/91 it was held that the mere act of programming by itself could not take a computer implementation outside the “as such” exclusion because programming per se merely involves the presentation or ordering of information and/or the performance of a mental act.

10. Aerotel/Macrossan [2007, RPC 7]This English Court of Appeal judgement is whole-heartedly disliked by the EPO (see Leaman Browne Practice Note: PATENTABILITY OF PROGAMS FOR COMPUTERS: Extent of the “As Such” Exclusion following UK Court of Appeal Decision in Symbian) because any reference to the prior art when deciding if an invention is excluded would lead to “insurmountable difficulties”. However, we mention the judgement in this summary because the Technical Board of Appeal qualified the correct approach to assessing invention by stating that a good faith interpretation of the European Patent Convention means that “the technical effect approach (with the rider)” applied in Aerotel/Macrossan is irreconcilable with the EPC for the further reason that it presupposes that novel and inventive purely excluded matter does not count as a ‘technical contribution’.

11. Symbian Limited vs. Comptroller decision [2008 EWCA Civ 1066 Case No. A3/2008/0950]The UK Court of Appeal shifted the UK position back towards the “global approach” to invention as established in T208/84-Vicom. It was suggested that the Aerotel/Macrossan decision was not an aberration but was consistent with EPO case law. Significantly paragraph 56 of the Symbian decision re-aligns the EPO and law in the UK because “when a computer with a new program operates better than a similar prior art computer, “to say, “oh but that is only because it is a better program — the computer itself is unchanged” gives no credit to the practical reality of what is achieved by the program. As a matter of such reality there is more than just a “better program”, there is a faster and more reliable computer”.

12. The EBA Referral in G03/2008 This is a recent reference to the EPO Enlarged Board of Appeal. Such a referral could be very important. Unfortunately it seems likely that this referral may not have the desired results. Commentary from within the EPO and UK IPO confirms our earlier position that the referral will maintain the status quo because (1) it asks the wrong questions (2) in a leading way that will (3) lead to inevitable answers that (4) provide no additional clarity on the significant issues. Rather, the real issues on which guidance is required are:

1. If computer programs fall within a field of technology for which patents can be granted, at what point does an invention, implemented as a computer program, acquire a technical contribution sufficient to take it beyond the “as such” exclusion of Art. 52(2) & (3) EPC?

2. How, if at all, does this answer change in relation to any mixed invention that combines technical features with interacting, non-technical features?

In CVON, the English High Court judge suggested that there are essentially 5 ways of considering whether the claimed subject matter possesses the requisite “technical effect”. Even so, the Judge also qualified his comments (to reconcile the UK and EPO positions) by saying that it was still necessary to consider whether such a claimed technical effect (i.e. the EPO’s technical contribution) lies solely in subject matter excluded by Art. 52(2) EPC.

The suggested approach (which we view as useful) is to consider:

1. Whether the claimed technical effect has a technical effect on a process which is carried on outside of the computer? [Commentary: this appears to touch on aspects of the recent machine-or-transformation test in the decision of the US Federal Circuit in Bilski].

2. Whether the claimed technical effect operates at the level of the architecture of the computer, i.e. whether the effect is produced irrespective of the data being processed or the application being run? [Commentary: this seemingly reflects the IBM decisions T0115/85, T06/83 & T22/85 as referred to in Gale's application 1991 R.P.C. 305].

3. Whether the claimed technical effect results in the computer being made to operate in a new way? [Commentary: this seems to equate to the position in T1173/97-IBM].

4. Whether there is an increase in speed or reliability of the computer. [Commentary: in accordance with Symbian].

5. Whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented. [Commentary: in accordance with T258/03-Hitachi].

The judge’s approach contrasts with the tongue-in-cheek advice once offered to a junior UK IPO Examiner who inquired about the nature of “technical contribution”… the witty reply from a senior colleague was: “It’s like an elephant, you’ll recognize it when you see one”.

Section III: Observations, Conclusions and Recommendations

The definition of the technical problem remains difficult if the novel and creative concept making up the core of a claimed invention lies outside any technological field. This is frequently the case with computer implemented inventions or other excluded subject matter. Therefore it is necessary to reflect on the real technical contribution over the prior art.

The handling of interactions between technical and non-technical features is not well understood by the EPO examiners since there is little guidance from existing case law. Also, EPO examiners often consider themselves to be technical experts, which belief can result in the inventive step being inappropriately trivialized. Unfortunately, G03/08 is not going to help to provide a consistent test and is also unlikely to provide a clearer picture.

Successful examination depends on clearly developed arguments that point out these interactions. Written arguments are preferred since they are less easily ignored and provide a basis for any subsequent appeal. And it is important to question and expose each and every assumption that the examiners make in assessing inventive step of potentially “non technical” subject matter.

In trying to define the “technical contribution of the invention” (following Vicom), it seems appropriate to argue that such a contribution provides, in “practical reality”, something that works better by virtue of the invention.

When drafting the detailed description, it is necessary to bear in mind the international nature of the application and the differing standards or tests for both inventive step and excluded subject matter:

1. Avoid using language that directly reads onto the European exclusions.

2. UK Courts have been keen to latch onto statements that suggest ethical considerations and seemingly to exercise moral prejudice (however wrong) in their reasoning.

3. Emphasize the functional effect(s) and practical reality achieved by the invention.

4. Do not obscure the invention, but be clear while mindful to cover the various aspects and embodiments of the invention.

· In Conor Medsystems vs. Angiotech [2008] UKHL 49, the UK Law Lords were extremely critical when they stated that “the inventors and those who drafted the specification have to some extent brought the tribulations of this litigation upon themselves”.

5. Avoid inappropriate use of the word “may” that makes the embodiments appear too tenuous. Internal commentary from within the UK IPO is “say what you see and mean what you say”.

6. Avoid contrasting any advantages attributable to the invention as corresponding to business transactions, e.g. credit card transactions.

7. Provide a mix of functionally interacting technical and non-technical features, rather than an aggregation of unrelated features (see T37/82, T285/91 and T294/89).

8. UK IPO Examiners have recently indicated that the four-stage Aerotel/Macrossan test can be overcome with reference to the specific technical operation of the system, because the context of the invention may often reflect an underlying technical contribution.

10. Think laterally to turn commercial advantages achieved by the claimed invention into technical solutions that have an underlying technical problem.

· For example, the inventor’s idea is to alert a gambler to the existence and location of a gaming machine (in a casino) perceived by the player to be either “hot” or “cold” and that is therefore ripe for payout. The inventor’s idea might be interpreted by the Examiner as seeking to generate greater cash revenue by encouraging the commencement of gambling in the shortest time.

To place a technical slant on this objective, the specification could instead be drafted to describe the technical contribution as being embodied in either:

a system for managing the playing of gaming machines across a network, the system operatively based on user selected criteria and the re-direction of that user based on their individually selected criteria; or

a system controller that determines game machine usage and which operates to distribute usage of machines [across the casino] by generating and displaying location identities of gaming machines that fall into each of a plurality of user-identified categories.

By framing the inventor’s idea in terms of the technical impact on either the system (as a whole) or on the system controller, points (i) and (ii) deflect the Examiner’s attention away from potentially objectionable “non-technical” business aspects.

The recent Federal Circuit decision in Bilski has brought the US position on claims directed towards non-patent eligible subject matter under 35 U.S.C. §101 closer to the EPO approach. At the same time and in a complementary sense, the overly-aggressive reaction in the UK (following Aerotel/Macrossan) has been tempered by Symbian (and followed in CVON) to endorse a perceived common international position on, at least, the patentability of business methods. Whether the current legal position will restrict the appropriate reward for ingenuity and curtail investment in innovation is a discussion for another day.

Both the EPO and European national Courts get decisions wrong. Strong advocacy skills and a willingness to question and expose weak arguments are critical in building a successful team that can acquire appropriate rights.

Notice:This practice note reflects the current opinion of Leaman Browne and is distributed to selected associates and friends with a view to outline opportunities and to promote or highlight effective prosecution regimes before the UK IPO & the EPO. The views expressed herein may change with time and should not be considered as legally binding. Should specific questions or issues arise, Leaman Browne recommends that, prior to the undertaking of any course of legal action whatsoever, specific professional advice be obtained by the reader from a competent and qualified advisor. In this latter respect, Leaman Browne remains at the reader’s assistance. For specific questions, please refer to any query to Bruce C. Dearling at bcd@lbpat.com.